By: Corinne Fombelle

“New year, new me”[1] may sound like a tacky caption that no one wants to see. But what if a business needs to rebrand and come up with a whole new image? Here are three reasons why rebranding might be advisable, how to prevent this from happening, and what to do if it is necessary.

 

  • Trademark Infringement

A new business founder may come up with a bright idea and work tirelessly to bring that idea to life only to realize that their business name or logo is already being used by someone else. To save yourself the headache and disappointment of starting from scratch, founders should equip themselves with the basics of trademark before getting into the nitty gritty of building their business.

 

What is trademark anyway?

Trademark[2] is generally a word, symbol, or design that distinguishes one brand from another.[3] Although most commonly used for business names and logos, certain identifying smells[4] or sounds[5] can also be trademarked. The goal of trademark is to prevent customer confusion and to give purchasers a sense of trust or reliance on a certain brand. It should not be confused with other forms of intellectual property law: copyright[6] (for creative expression) and patent[7] (for useful inventions). Trademark law is codified in the Trademark Act of 1946 (aka the Lanham Act).[8]

Is trademark that important?

A brand’s trademark is one of their most valuable and important[9] assets.[10] Major household brand names like Google, Microsoft, and Walmart have trademarks valued in the $35-45 billion range (as of 2011.)[11] Although a fledgling business will not start off anywhere near that ballpark, a unique trademark is still vital for establishing a reputation and name recognition. Considering the importance of trademark, ensuring that your business has a registered trademark can help get it off the ground. Additionally, trademark infringement lawsuits[12] (if you fail to cross-check current trademarks and/or decide to go ahead with your infringing mark anyway) cost thousands of dollars just to litigate and could cost thousands or multi-millions[13] more if you lose.

 

How do I cross-check my idea with current trademarks?

To avoid an early-stage rebrand, search your business’s potential name before launching. Step one can be as simple as a Google search of your name idea to see if anything is already out there. Next, checking a state database[14] can help you determine if there is anything in a more localized area. Finally, and perhaps most importantly, the United States Patent and Trademark Office (USPTO) has a database search engine called the Trademark Electronic Search System (TESS)[15]. Use TESS to check if anyone has already federally registered a name or design mark. To cover all possibilities of confusing similarity, be sure to check multiple variations of a potential name[16] and compare its registered class.[17]

 

  • Cultural Appropriation/Offensive Imagery

Using a name or image that appropriates someone else’s race or identity and/or is perpetuating a racist stereotype can be another reason to rebrand that is entirely outside of the intellectual property realm. This is particularly a recent issue for sports teams, with mascots from universities changing due to the appropriating and offensive nature of their former Native American-related team names. Schools including University of Illinois[18] and University of North Dakota[19] have both followed NCAA guidelines[20] by eliminating past offensive branding and rebranding entirely. Similarly, the newly re-named Washington Football Team is still in the process of undergoing an image overhaul.[21]

This is not only a phenomenon in the sports world. Multiple companies, notably Aunt Jemima[22] pancakes and Uncle Ben’s[23] rice, have sparked controversy for their problematic images that perpetuate harmful stereotypes of the Black community and are facing massive rebranding financial and reputational costs.

The easiest way to avoid this kind of rebranding is to educate yourself. Read an anti-racist book[24], brush up on history, note which companies have crossed the line, and do not even risk coming anywhere near a name or image that has racist roots.

If it is already too late and a business has launched but quickly realizes it has made a grievous error in selecting an offensive name or logo, a public apology[25], rebrand, and registration of a new trademark are typically the most advisable steps.

 

  • Evolving Mission

Finally, a business may have no negative reason to rebrand. Maybe their founder feels it is time to take the company in a new direction[26], and the old image just doesn’t quite fit anymore. In that case, it is time for a new trademark registration.

 

Trademark Registration

The basics of registering a trademark[27] include potentially consulting with a licensed attorney, submitting filing paperwork, and paying the fees (starting at $225 for one category of goods and services).[28] The ensuing process called “trademark prosecution” (in which there is back-and-forth communication between the applicant and a representative of the USPTO) takes months to complete. Despite the patience it requires, the satisfaction of successfully rebranding a business with a name or logo that matches its current goals is worth it. Although IHOP was just kidding when they said they were changing to IHOb[29], having a brand makeover may actually be the move for expanding and ever-adapting businesses to stay relevant in modern times.

[1] https://www.azquotes.com/quotes/topics/new-year-new-me.html

[2] https://www.uspto.gov/trademarks-getting-started/trademark-basics

[3] https://www.uspto.gov/sites/default/files/documents/BasicFacts.pdf

[4]https://www.washingtonpost.com/news/business/wp/2018/05/24/remember-how-play-doh-smells-u-s-trademark-officials-get-it/

[5] https://99percentinvisible.org/episode/nbc-chimes-behind-scenes-first-trademarked-sound/

[6] https://www.copyright.gov/title17/title17.pdf

[7] https://www.govinfo.gov/content/pkg/USCODE-2011-title35/html/USCODE-2011-title35.htm

[8] https://www.uspto.gov/sites/default/files/documents/trademark_rules_statutes_2013-11-25.pdf

[9]https://www.forbes.com/sites/forbesbusinesscouncil/2020/05/11/in-a-digital-world-your-most-valuable-property-is-intellectual/#7b994f13d2cc

[10]https://www.entrepreneur.com/article/235887#:~:text=Trademarks%2Fbrands%20are%20an%20efficient,likely%20to%20look%20for%20alternatives.

[11]https://www.forbes.com/sites/seanstonefield/2011/06/15/the-10-most-valuable-trademarks/#273a9cdd36b8

[12] https://www.trademarknow.com/blog/9-nasty-trademark-infringement-cases-and-how-to-avoid-them

[13] https://www.law360.com/articles/1128655

[14] https://cofs.lara.state.mi.us/corpweb/trademarksearch/trademarksearch.aspx

[15] https://www.uspto.gov/trademarks-application-process/search-trademark-database

[16] https://www.uspto.gov/trademarks-application-process/searching-trademarks/tess-tips

[17] https://www.nolo.com/legal-encyclopedia/trademark-classes.html

[18] https://fightingillini.com/news/2014/4/16/Illinois_Athletics_Unveils_Updated_Brand_Identity.aspx

[19] https://www.jamestownsun.com/sports/1856317-university-north-dakota-announces-rebranding

[20]http://fs.ncaa.org/Docs/PressArchive/2005/Announcements/NCAA%2BExecutive%2BCommittee%2BIssues%2BGuidelines%2Bfor%2BUse%2Bof%2BNative%2BAmerican%2BMascots%2Bat%2BChampionship%2BEvents.html

[21]https://www.forbes.com/sites/kristidosh/2020/07/13/what-the-redskins-rebranding-process-looks-like-from-here/

[22]  https://www.cnn.com/2020/06/17/business/aunt-jemima-logo-change/index.html

[23] https://www.cnn.com/2020/09/23/business/uncle-bens-rice-rebrand-bens-original/index.html

[24] https://www.nytimes.com/2019/05/29/books/review/antiracist-reading-list-ibram-x-kendi.html

[25] https://fortune.com/2014/08/13/ceos-saying-sorry-the-art-of-the-corporate-apology/

[26]https://www.forbes.com/sites/forbestechcouncil/2018/11/30/welcome-to-dunkin-why-a-rebrand-is-only-half-the-battle/#286a64e22dcc

[27] https://www.uspto.gov/trademarks-application-process/filing-online

[28] https://www.uspto.gov/trademark/trademark-fee-information

[29] https://fortune.com/2018/07/09/ihob-ihop-rebranding-gimmick-scam/